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The Endurance of Patent Interferences in a First-to-File World

November 29, 2011

Contrary to general euphoria, the America Invents Act does not end the first-to-invent system or patent interferences to determine priority of invention, even for patents issuing from applications filed after the Act’s “first-to-file” effective date (March 16, 2013).

Instead, a provision buried in uncodified § 3(n)(2) expressly requires that the existing interference provisions of 35 USC § 102(g) and 135 “shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time . . . a claim to an invention having an effective filing date . . . that occurs before [March 16, 2013]; or a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.”

This provision extends the two statutory interference sections to “each claim” of an application or patent which is subject to the new first-to-file provisions, where the patent or application contains “a claim” that has a pre-Act effective filing date. More broadly, each claim of a post-Act application or patent remains subject to current interference provisions if the application or patent contains a specific reference to any pre-Act application, since those earlier applications contained claims with pre-Act filing dates. The only post-Act applications that escape the interference provisions may well be applications with no “specific reference” to any pre-Act application, apart from issues of whether specific claims are in fact entitled to pre-Act benefit.

Interferences are likely to endure for some years after the first-to-file provisions become effective, and at least potentially until all patents have issued from applications filed before March 16, 2013, as well as continuations and divisionals thereof. The time bars of current § 135(b) will also be extended, so an interference will be precluded under § 135(b)(1) if an applicant fails to present a claim that is the same or substantially the same as a patent claim within 1 year of patent issuance. Although publication of application A also raises a potential bar under § 135(b)(2), it is not always necessary for a rival to actually present a claim in application B within one year of publication of application A. For example, if application B was effectively filed before Application A, Applicant B can bide its time in presenting interfering claims while prosecution of the earlier-filed application A proceeds through continuation application(s). Moreover, the statutory bars generally do not apply if an applicant presented an interfering claim within the 1-year period, but later canceled the claim during prosecution. Statutory bar issues have not been simple in interferences, and have produced an extensive body of USPTO and Federal Circuit precedent.

A number of interesting questions are left open by the interference provisions of the 2011 Act, which extend the jurisdiction of the Patent Trial and Appeal Board to proceedings in interferences declared before the effective date, but not afterward, in § 6(f)(3)(B). Similarly, a civil action in district court under § 146 and an appeal to the Federal Circuit under § 141(d) are extended only to final decisions in interferences that are commenced before the effective date, by § 6(f)(3)(C). The Board’s jurisdiction, and the extent and forum of judicial review, are thus uncertain for post-Act interferences.

The unqualified extension of § 102(g) also raises interesting issues, because the current statute contains two subsections, the first of which refers to an interference based on proof of prior invention abroad “to the extent permitted in section 104.” Section 104 is repealed by the 2011 Act, is not extended, and evidently can no longer permit proofs of any extent under § 102(g)(1). It is thus possible that the courts will hold that foreign proofs of invention are not admissible in post-Act interferences. If so, the scope of § 102(g) will effectively be limited to current § 102(g)(2), which restricts interferences to proof that a prior inventor made the invention in the US.

Current § 135(a) requires that the Board of Patent Appeals and Interferences “shall determine questions of priority of the inventions and may determine questions of patentability.” It seems doubtful that the new Patent Trial and Appeal Board will be enthusiastic about continuing to decide questions of patentability in post-Act interferences, providing that it has jurisdiction to decide interferences that arise after the effective date. To the extent that interferences remain a viable alternative for challenging patent validity on bases other than priority of invention, interferences will have certain advantages over the new post-grant opposition procedures, including the lack of estoppel in district court litigation.

These comments are at most speculative, until the USPTO issues regulations governing the treatment of interferences under the America Invents Act, and the courts definitively construe the uncodified interference provisions.

The relationship between post-Act interferences and Post-Grant Review will be considered in a subsequent post.